Who Should Be Upstream Without a (Greek) Paddle?
By: Susan Neuberger Weller
On May 8, a long time manufacturer of ceremonial paddles marketed to fraternities and sororities filed a petition for certiorari with the US Supreme Court seeking relief from an injunction barring him from using Greek organizations’ trademarks in his advertising. Thomas Kenneth Abraham d/b/a Paddle Tramps Manufacturing Co. v. Alphi Chi Omega, case no. 12-1341 (2013). The lower courts applied the legal doctrines of laches and acquiescence to find that the Greeks waited much too long to assert their rights and, as a result, could not collect damages for trademark infringement. However, they did allow a permanent injunction against future advertising by the Company using the Greek organizations’ trademarks. Since there is a significant split among the circuit courts on the issue of when these two legal doctrines bar a trademark injunction, this case may be ripe for Supreme Court review. So, what will the outcome of this case mean to trademark owners and third-party users alike?
By: Susan Neuberger Weller
Those of us in a certain age bracket will remember Mutual of Omaha’s “Wild Kingdom” television program that first began in 1963. The Emmy Award-winning show’s first run ended in 1986, and the show went into production again in 2002 for broadcast on the Animal Planet network. The show is about wildlife, and focuses on a variety of subjects in that genre. The company recently filed suit against Couristan, Inc., a carpet and rug manufacturing company in business since 1926, alleging trademark infringement, unfair competition, deceptive trade practices, and trademark dilution for Couristan’s use of the mark WILD KINGDOM for a “safari-inspired residential carpet” collection showcasing three different animal patterns. Mutual of Omaha Insurance Co. v. Couristan Inc., 8:13-cv-00123 (D. Neb. 2013 ). This may cause many people to ask the question, “What the heck does a carpet collection have to do with an animal wildlife television program, and why would anybody be confused about that?” A reasonable question which requires an informed answer.
By: Susan Neuberger Weller
The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the organization that oversees domain names worldwide. It recently began accepting new applications for expanding the number of generic top-level domains (“gTLDs”) on the Internet. The most popular gTLDs until now have included .com, .info, .org, and .net. With the approval of applications for new gTLDs will come an unlimited number of new opportunities on the Internet for entrepreneurs of all types, including trademark infringers. Thus, trademark owners must make some decisons on how to address this new threat. One possibility is the new Trademark Clearinghouse.
Written by: Joseph M. DiCioccio
There have been many attempts over the last few years to address online copyright infringement. The most recent effort is the Copyright Alert System (“CAS”), which was rolled out in February 2013 as a system created to educate and alert the public about the dangers and harm caused by copyright infringement. The CAS is the first to outline pro-active, temperate measures to try to remedy one cause of the problem: the perceived anonymity of infringers operating through peer-to-peer websites. The CAS gives infringers the opportunity to be notified of and to discontinue their wrongful actions before costly litigation ensues.
The CAS is not a “law” but a voluntary effort by a private consortium (the Center for Copyright Information) comprised of a variety of large copyright owners (e.g., the Motion Picture Association of America [MPAA], the Recording Industry Association of America [RIAA] and Disney, among others) and internet service providers (e.g., cable companies such as Verizon, Cablevision, and Comcast or “ISPs”). Under the CAS, when content owners discover infringing content posted on websites alleged to knowing permit copyrighted content to be infringed (such as BitTorrent), they will send the suspected infringers a series of escalating “alerts” notifying them that they are accused of infringing copyright protected content. The CAS does not involve litigation or demands for damages. The hope is that through this process, users will realize that infringement is not taking place anonymously on peer-to-peer file sharing websites, that content owners are aware of the infringement, and that there can be serious and expensive legal repercussions if the infringement does not cease.
Written by: Ben Wagner
Five steps to protect a marks’ value
Trademark owners have a duty to police their mark. This applies to all types of marks – brand names, slogans, color, product shapes, or even a smell. The cost of dropping the ball on this duty can range from a bar on future enforcement of your rights against a particular company to a complete loss of all trademark rights. As a practical business reality, the value of marks that are not policed and their associated goodwill are always in danger.
This duty includes policing (1) for unauthorized uses of a mark, (2) for uses of confusingly similar marks, and (3) uses by approved trademark licensees. This blog post covers the first two types.
Written by Susan Neuberger Weller
Rapper Dr. Dre and the company he co-founded, Beats Electronics, LLC, are on the offensive at the US Trademark Trial and Appeal Board challenging a multitude of third-party applications for marks which consist of or contain the word “Beat”. The company owns a number of trademark registrations for use of its various BEATS marks on headphones, speakers, headsets, and other related electronic products and has applications pending for future use on clothing and other items. As reported in the WSJ Law Blog last week, the targets of this campaign are mix of smaller, little-known companies as well as big players such as Sony.
My colleagues in our Litigation practice, Harvey Saferstein and Nada I. Shamonki, recently authored an alert “Another Shoe Drops in Washington: Ninth Circuit Expands Personal Jurisdiction over Willful Copyright Infringers”.
On December 17, in Washington Shoe Co. v. A-Z Sporting Goods, Inc., the Ninth Circuit expanded the exercise by Federal District Courts of personal jurisdiction over out-of-jurisdiction defendants in federal copyright cases. Building on the Supreme Court’s seminal 1945 decision in Int’l Shoe Co. v. Washington, the court explained how an Arkansas shoe retailer that had never done business in the state of Washington could nonetheless be subject to personal jurisdiction in that state.
To read the full alert please click here.
By: Susan Neuberger Weller
On November 2, 2012, a federal jury in the Central District of California awarded Mixed Chicks LLC, a beauty supply company for mixed-race women, $839,535 in actual damages and $7,275,000 in punitive damages for willfully infringing the MIXED CHICKS® trademark and trade dress with its MIXED SILK line of products. Mixed Chicks LLC, v. Sally Beauty Supply LLC, et al., SACV11-00452 AG (FMOx) (C.D.C.A. 2012). On November 29, the infringer Sally Beauty Supply LLC agreed to a settlement of $8.5 million, which is larger than the actual jury award. It did so in order to avoid further hearings on and awards to Mixed Chick of its’ attorneys’ fees and of Sally Beauty’s profits as a result of its infringing activity.
Mixed Chicks LLC, a relatively small company founded in 2004 with approximately $5 million in annual revenue and approximately 15 full-time staff members, filed suit in March 2011 against Sally Beauty Supply LLC and related companies for federal and state trademark infringement, trade dress infringement, false designation of origin, and unfair competition claiming that Sally Beauty’s line of MIXED SILK hair care products infringed both the MIXED CHICKS ® trademark as well as the overall appearance of that line of products. The Complaint also claimed that Sally had “programmed or caused the search engine on the Sally Beauty website to operate in [a] manner to cause confusion or mistake, or to deceive as to the origin of the Mixed Silk hair care products with the intent to benefit from Mixed Chicks’ reputation and goodwill,” Apparently, when consumers searched “mixed chicks” on the Sally Beauty website only MIXED SILK products results would appear. Mixed Chicks claimed that the wrongful activity was willful and with the intent to benefit from the goodwill and reputation in the mixed race hair care product market that Mixed Chicks had developed through their specialized high-quality hair care products. Continue Reading
By: Susan Neuberger Weller
Ever since the US Supreme Court in MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118, 127 S, Ct, 764, 166 L. Ed.604 (2007) threw out the “reasonable apprehension” test as defining the grounds for bringing a declaratory judgment action, courts have considered a wide variety of factual circumstances in deciding which meet the Court’s redefinition of “controversy.”
The Declaratory Judgment act provides that “[i]n a case of actual controversy within its jurisdiction…any court of the United States…may declare the rights and other legal relations of any interested party seeking such a declaration, whether or not further relief is or could be sought.” [28 U.S.C. 2201(a)] In MedImmune, the Court noted that it had explained in prior opinions that the “case of actual controversy” language in the Act refers to the US Constitution’s Article III’s case-or-controversy requirement, and that a “controversy” under the Declaratory Judgment Act did not require any greater showing than that required under Article III. The Court clarified that declaratory judgment jurisdiction required disputes to be ‘“definite and concrete, touching the legal relations of the parties having adverse legal interests’; and that it be ‘real and substantial’ and ‘admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.’” 127 S. Ct. at 771. Or, as put another way, “[t]he question in each case is whether the facts alleged, under all circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Id. Although this standard test may sound relatively straightforward, it is not always easy in its application, as the floral delivery company 1-800-Flowers.com Inc. recently discovered.
My colleague Susan Weller recently authored an article for Law360 on protecting brand identity.
You can view the article here: Some Companies Must Do More To Protect Brand Identity